Case 2:16-cv-00741-RWS Document 236 Filed 08/16/17 Page 1 of 5 PageID #: 4029
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`§
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`§ Case No. 2:16-cv-00393-RWS
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`LEAD CASE
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`§
`§ Case No. 2:16-cv-00394-RWS
`§ Case No. 2:16-cv-00396-RWS
`§ Case No. 2:16-cv-00397-RWS
`§ Case No. 2:16-cv-00871-RWS
`§ Case No. 2:16-cv-00872-RWS
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`UNILOC USA, INC., et al.,
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`Plaintiffs,
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`v.
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`AVG TECHNOLOGIES USA, INC.,
`BITDEFENDER LLC,
`PIRIFORM, INC.,
`UBISOFT, INC.,
`KASPERSKY LAB, INC.,
`SQUARE ENIX, INC.,
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`Defendants.
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`UNILOC USA, INC., et al.,
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`Plaintiffs,
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`v.
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`ADP, LLC,
`BIG FISH GAMES, INC.,
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`Defendants.
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`PLAINTIFFS’ OPPOSITION TO EXPEDITED OPPOSED MOTION BY DEFENDANTS
`PIRIFORM, INC., ADP, LLC, BIG FISH GAMES, INC., BLACKBOARD INC.,
`BOX, INC., AND ZENDESK INC. FOR LEAVE TO FILE
`SUPPLEMENTAL CLAIM CONSTRUCTION BRIEFING
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`§
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`§ Case No. 2:16-cv-00741-RWS
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`LEAD CASE
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`§ Case No. 2:16-cv-00858-RWS
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`Case 2:16-cv-00741-RWS Document 236 Filed 08/16/17 Page 2 of 5 PageID #: 4030
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`Plaintiffs Uniloc USA, Inc. and Uniloc Luxembourg, S.A. (collectively “Uniloc”)
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`respectfully submit this Opposition to the Expedited Opposed Motion for Leave to File
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`Supplemental Claim Construction Briefing (“Motion for Leave”) filed by Defendants ADP, LLC
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`(“ADP”) and Big Fish Games, Inc. (Big Fish”) from the ADP lead case, No. 2:16-cv-00741, and
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`Defendant Piriform, Inc. (“Piriform”) from the AVG lead case, No. 2:16-cv-00393 (collectively
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`“the moving Defendants”).1 See Dkt. Nos. 217 (2:16-cv-00741); 186 (2:16-cv-00393).
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`I.
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`ARGUMENT
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`A.
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`The Docket Control Orders Required Timely Briefing of Indefiniteness
`Arguments
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`Pursuant to the Discovery Orders that were entered in the aforementioned cases, the
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`parties were directed to include any indefiniteness arguments in their Markman briefing.
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`Specifically, the Discovery Orders included the following provision:
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`Indefiniteness: In lieu of early motions for summary judgment, the parties are
`directed to include any arguments related to the issue of indefiniteness in their
`Markman briefing, subject to the local rules’ normal page limits.
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`See Dkt. No. 143, p. 5 (2:16-cv-00741); Dkt. No. 73, p. 7 (2:16-cv-00393).
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`In their Markman briefing, the moving Defendants raised only two indefiniteness
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`arguments applying to eight means-plus-function clauses. See Dkt. 135-1, pp. 5-6 (April 20,
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`2017); Dkt. 150, pp.15-19 (June 10, 2017). With respect to the over 100 other means-plus-
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`function clauses, the moving Defendants did not raise or brief any indefiniteness issues. Instead,
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`Uniloc and Defendants together began the time-consuming and tedious task of meticulously
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`combing through the written descriptions of the patents-in-suit (and two other patents,
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`incorporated by reference) to catalog the multitude of structures that corresponded to the claimed
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`functions.
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`1 Uniloc has settled with Zendesk, Inc. and Uniloc has also filed Notices of Voluntary Dismissal
`with respect to Blackboard, Inc. and Box, Inc.
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`Case 2:16-cv-00741-RWS Document 236 Filed 08/16/17 Page 3 of 5 PageID #: 4031
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`Although the parties needed more time to finish the job by the last joint submission, the
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`parties did not encounter any significant differences. Thus, the parties reported to the Court, on
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`June 16, 2017:
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`The parties have exchanged several-rounds of competing identifications of
`specific structure for each of these [means-plus-function] terms, and are
`continuing to work in good faith to resolve their remaining disagreements. At this
`time, the parties do not believe that the Court needs to address these
`disagreements as part of the claim construction process.
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`See Dkt. 159, p. 2; Dkt. 186, p. 2.
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`On June 23, 2017, Defendants filed an “Emergency” Motion to Enforce the Parties’
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`Previously Agreed Constructions or, in the Alternative, for Leave to File Supplemental Briefing.
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`See Dkt. No. 195 (2:16-cv-00741); Dkt. No. 162 (2:16-cv-00393). In their motion, Defendants
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`did not raise any indefiniteness arguments.
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`On July 5, 2017, the Court granted Defendants’ motion and rescheduled the Markman
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`hearing from July 7 to August 10, 2017 and ordered further Markman briefing. See Dkt. No. 199
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`(2:16-cv-00741); Dkt. No. 168 (2:16-cv-00393). That same day, Uniloc’s counsel wrote to
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`Defendants’ counsel: “Guys – This is good news. Now maybe we can finish the MPF project!”
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`See Gannon Dec., Ex. A.
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`On July 10, 2017, Uniloc was surprised to learn that the moving Defendants decided to
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`change their strategy and, for the first time, argue indefiniteness as to virtually all of the (over
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`100) means-plus-function clauses. This change was not a result of an oversight; nor was it
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`insignificant. Rather, it was a radical change in defense strategy, being implemented long after
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`the deadlines this Court (and Judge Gilstrap) had imposed with respect to the Markman briefing.
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`See Dkt. No. 143 (2:16-cv-00741); Dkt. No. 73 (2:16-cv-00393).
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`Case 2:16-cv-00741-RWS Document 236 Filed 08/16/17 Page 4 of 5 PageID #: 4032
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`The moving Defendants had not previously disclosed, or even hinted, in prior
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`communications with Uniloc, or in filings with this Court, that they would attempt such a
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`strategy. They did not mention it in the June 16 Joint Claim Construction Chart (Dkt. 159 (2:16-
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`cv-00393); Dkt. 186 (2:16-cv-00741)), nor in the emergency motion filed on June 23 (Dkt. 162
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`(2:16-cv-00393); Dkt. 195 (2:16-cv-00741)).
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`The moving Defendants’ simply adding indefiniteness as an “additional issue” to the
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`Joint Claim Construction and Prehearing Statement filed on July 11, 2017 violates the Docket
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`Control Orders entered in these cases. See Dkt. No. 202 (2:16-cv-00741); Dkt. No. 169 (2:16-
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`cv-00393. Furthermore, it contravenes this Court’s requirements that parties act diligently, and
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`formulate positions and arguments in a timely manner. See Finisar Corp. v. DirecTV Grp., Inc.,
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`424 F. Supp. 2d 896, 901 (E.D. Tex. 2006)(“[t]he Local Patent Rules ‘exist to further the goal of
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`full, timely discovery and provide all parties with adequate notice and information with which to
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`litigate their cases, not to create supposed loopholes through which parties may practice litigation
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`by ambush.”); see also STMicroelectronics, Inc. v. Motorola, Inc., 307 F. Supp. 2d 845, 849
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`(E.D. Tex. 2004) (“[t]he Court's Patent Rules are specific exceptions to the normal pretrial
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`procedures that the Court has enacted to effectuate an orderly and efficient pretrial process”).
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`The Court has already construed the claim language finding several terms indefinite. The
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`moving Defendants’ Motion for Leave is simply too late. Defendants had the opportunity to
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`properly raise their indefiniteness defenses during their Markman briefing but failed to do so.
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`II.
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`CONCLUSION
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`For the foregoing reasons, the moving Defendants’ Motion should be denied.
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`Case 2:16-cv-00741-RWS Document 236 Filed 08/16/17 Page 5 of 5 PageID #: 4033
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`Date: August 16, 2017
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`Respectfully submitted,
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` /s/ Kevin Gannon
`Paul J. Hayes
`Kevin Gannon
`James J. Foster
`Prince Lobel Tye LLP
`One International Place - Suite 3700
`Boston, MA 02110
`Tel: 617-456-8000
`Email: phayes@princelobel.com
`Email: kgannon@princelobel.com
`Email: jfoster@princelobel.com
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`Edward R. Nelson III
`ed@nelbum.com
`Texas State Bar No. 00797142
`Anthony M. Vecchione
`anthony@nelbum.com
`Texas State Bar No. 24061270
`NELSON BUMGARDNER PC
`3131 West 7th Street, Suite 300
`Fort Worth, Texas 76107
`Phone: (817) 377-9111
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`ATTORNEYS FOR THE PLAINTIFFS
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`CERTIFICATE OF SERVICE
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`I certify that all counsel of record who have consented to electronic service are being
`served with a copy of this document via the Court’s CM/ECF system per Local Rule CV-5(a)(3)
`on August 16, 2017.
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` /s/ Kevin Gannon
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